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A design patent, unlike a utility patent, limits protection to the ornamental design of the article. If the patented design is primarily functional rather than ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article.
Richardson owns the '167 patent, a design patent that claims the design for a multi-function carpentry tool that combines a conventional hammer with a stud climbing tool and a crowbar. The tool is known as the "Stepclaw." The only claim of the '167 patent claims the ornamental design of the tool. Stanley manufactures and sells construction tools. In 2005, Stanley introduced into the U.S. market a product line of tools by the series name "Fubar." The Fubar is sold in five different versions and is useful in carpentry, demolition, and construction work. Stanley successfully applied for and obtained U.S. Patent D562,101 ("the '101 patent") on the basic Fubar design. All five versions of the tool are built around that same basic Fubar design. On June 3, 2008, Richardson filed a complaint against Stanley in the district court for the District of Arizona alleging that the Fubar tools infringed his '167 patent. In addition, Richardson alleged that Stanley was unfairly competing with him in the U.S. market. In response to Richardson's complaint, Stanley first filed a motion to dismiss on September 10, 2008 and later filed an answer to the complaint on September 22, 2008. On October 22, 2008, Richardson filed his request for a jury trial, which Stanley moved to strike as untimely under Federal Rule of Civil Procedure 38(b). In response, Richardson requested that a jury trial be granted under Rule 39(b). The district court granted Stanley's motion to strike and denied Richardson's Rule 39(b) motion. The court also granted Stanley's motion to dismiss Richardson's unfair competition claim. On April 2, 2009, the court conducted a bench trial on Richardson's patent infringement claim and entered judgment of noninfringement in favor of Stanley. In its order, the court first distinguished, as part of its claim construction, the ornamental aspects from the functional aspects of Richardson's design and then determined that an ordinary observer, after discounting the functional elements of Richardson's design, would not be deceived into thinking that any of the Fubar tools were the same as Richardson's Stepclaw. The court therefore concluded that the overall visual effect of the Fubar was not substantially similar to that of the Stepclaw, and that the '167 patent had not been infringed. Richardson timely appealed the court's rulings. The owner contended that the district court improperly construed the design claim of the patent by separating the functional aspects of the design from the ornamental ones, rather than considering the design as a whole. The owner also argued that the finding of non-infringement failed to perform a comparison of the prior art, the patented design, and the manufacturer's tool.
Was the finding of non-infringement proper?
The appellate court held that the finding of non-infringement was proper. The owner's multi-function tool comprised several elements that were driven purely by utility, and the functional aspects of the patented design were properly factored out in construing the scope of the design claim. Further, from the perspective of the ordinary observer, the only similarities between the patented tool and the manufacturer's tools were those of unprotectable functional elements, and the overall visual effect of the manufacturer's tools was more rounded with fewer blunt edges as compared to the owner's tool, which could not cause market confusion.